The Brazilian PTO celebrated a remarkable achievement at the beginning of the new year. In just four months, the office managed to reduce the patent backlog by 14%. Further important milestones towards eliminating the backlog for good are expected to be reached throughout the year, as the office intends to reduce the backlog by 80% by 2021. This was all possible due to a pioneer project called the Preliminary Standardized Office Action Program, implemented in September 2019. Once the project is successfully completed, the PTO estimates it will take under 24 months to examine new applications.
This new programme divides applications into three groups:
Group I – applications with foreign counterpart already examined
Group II – applications with no foreign counterpart examined
Group III – applications subject to oppositions, fast-track, already examined by the PTO or Brazilian FDA, or filed after December 31 2016
Regarding Group I, the PTO publishes a standardised office action listing the prior art references identified by a foreign patent office. For Group II, the PTO carries out a search and publishes a standardised office action just listing the prior art found. In both cases, applicants have 90 days to respond, otherwise applications are dismissed with no right to appeal. Group III follows regular examination.
Standardised office actions receive no technical comments on patentability. They simply contain a list of prior art; applicants should amend the claims and/or present arguments. Further technical opinions may be later issued on patentability or formalities, but they are limited to the prior art listed before.
As the programme is already yielding great results, it should be a game changer for Brazil. If its goals are indeed achieved, the Brazilian PTO will be able to stand on an equal footing with its foreign counterparts in relation to the average patent examination time.
Ricardo Nunes and Rafael Salomao
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